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April 15, 2013

As early as April 23, 2013, the Internet Corporation for Assigned
Names and Numbers, better known as ICANN, may launch the long-awaited first set
of new top level domain names, or gTLDs, which are the combinations of letters
that appear to the right of the “dot” in an internet domain name. This
means that rather than the options for domain names being limited to “.com,”
“.net,” “.org,” and a handful of other gTLDs, there could soon be hundreds or
even thousands of gTLDs available. (This blog has previously discussed the new gTLDs here, here,
here,
and here.) The implementation of these new gTLDs may cause
concern for trademark owners that wish to protect their marks. While a company
may have registered its brand domain name in the “.com” or “.net” gTLDs (for
example, brandname.com) a long time ago, to protect its mark in the domain name
space, it must now be on the lookout for the registration of a domain name
consisting of its trademark and new
gTLD

ICANN has launched a Trademark Clearinghouse to help trademark
owners protect their trademarks. A trademark owner who submits its registered
trademark to the Trademark Clearinghouse via ICANN’s website will be provided
with two useful services. The first of these services, called the “Sunrise
Service,” gives trademark owners a head start by allowing them to register
domain names incorporating their trademarks and a new gTLD before anyone else.
The second service, the “Trademark Claims Service,” notifies a third party if
it is registering a domain name in which the letters to the left of the “dot”
are identical to a trademark recorded in the Trademark
Clearinghouse. Although the Trademark Claims Service does not block a
third party from registering a domain name that incorporates a trademark, it
places potential infringers on notice that their domain name does include a
trademark. The owner of the trademark
recorded in the Clearinghouse is then notified of the potentially infringing
domain name.

Trademark owners may now submit their trademarks to the Trademark
Clearinghouse, which opened its doors on March 26, 2013. The fees for
submission are $150 per mark for one year, $435 per mark for three years, and
$725 per mark for five years. A trademark owner must prove that it owns a
mark by submitting evidence such as a trademark registration, a judicial
decision demonstrating court-validation, or other evidence that the mark
constitutes that owner’s intellectual property. In order to be recorded
in the Clearinghouse, a mark must be a word mark or, in the case of design
marks, the textual element of the mark must be “predominate” and “clearly separable
or distinguishable” from the non-textual elements.

More details about ICANN’s Trademark Clearinghouse are
available in a recent Arnold & Porter advisory, available here.